What to Expect From Neil Gorsuch on IP, Patents and Trade Secrets

Gorsuch's views on patents are mostly unknown. But he's had plenty to say in other areas of intellectual property.

U.S. Supreme Court nominee Judge Neil Gorsuch. (Photo: Diego M. Radzinschi/ALM)

Robert Greenspoon believed he was close. His constitutional challenge to new administrative procedures for reviewing patent validity was distributed three times at U.S. Supreme Court conferences last year before the court finally denied certiorari in October. The Flachsbart & Greenspoon partner wonders if his challenge fell one vote shy on the eight-member court.

If Tenth Circuit Judge Neil Gorsuch is confirmed to the court's vacant seat, Greenspoon and other patent owner advocates might have one more vote for scaling back the inter partes review procedures created by the America Invents Act (AIA). Gorsuch has virtually no track record on patents, but his feelings about delegating judicial decision-making to executive agencies are clear.

Gorsuch on Intellectual Property

  1. Gorsuch's skepticism of the Chevron deference doctrine could mean less willingness to endorse USPTO rules for conducting AIA trials.

  2. At the Tenth Circuit, Gorsuch has tackled complex trade secrets and copyright issues with authority and precision. Lawyers can expect a sophisticated level of engagement on IP issues.

  3. The judge's views on patents are mostly unknown. One litigator says his ability to "dig into even tedious legal issues and make them accessible to most readers" will be a plus for Supreme Court patent law.

"Transferring the job of saying what the law is from the judiciary to the executive unsurprisingly invites the very sort of due process (fair notice) and equal protection concerns the framers knew would arise if the political branches intruded on judicial functions," Gorsuch wrote in an opinion last year criticizing the doctrine of Chevron deference to administrative agencies.

Gorsuch was writing about immigration courts, but Greenspoon is hoping the same reasoning would apply to the U.S. Patent and Trademark Office and its rules governing AIA proceedings. The U.S. Court of Appeals for the Federal Circuit is gearing up for en banc votes on several of those rules this year, and it's possible one or more could make it to the high court.

Greenspoon acknowledges it's far from certain how Gorsuch would vote. "I doubt there's any IP lawyer who can claim to have a crystal ball," he said.

Gorsuch's views on patents are mostly unknown. But he's had plenty to say in other areas of intellectual property. As a Tenth Circuit judge he has contributed a handful of decisions on trade secrets, copyright and trademarks. The opinions speak with authority, precision and an eagerness to engage in IP issues.

"Judge Gorsuch's opinions reflect a willingness to dig into even tedious legal issues and make them accessible to most readers," Kirkland & Ellis partner John O'Quinn said. "That would be tremendously valuable in the patent cases the Supreme Court will address."

Orrick, Herrington & Sutcliffe senior counsel James Pooley was especially impressed by Gorsuch's analysis of the interplay between trade secret and patent laws in his 2008 opinion Russo v. Ballard Medical Products. Gorsuch upheld a $20 million award against a medical device company despite the company's protest that it held a patent on the device and that federal patent law should therefore pre-empt the state law trade secret claims.

"To be sure, Mr. Russo pointed at trial, precisely as he did in his complaint, to Ballard's patents as evidence of how Ballard misappropriated his secret," Gorsuch wrote in a 41-page opinion. "But this bare fact does not necessarily mean that his trial raised any question of federal patent law … let alone suggest that Mr. Russo sought rights associated with being a patent's inventor."

Pooley said Gorsuch could have disposed of much of the case with a simple citation: "Go read Kewanee Oil," a 1974 Supreme Court opinion on trade secret pre-emption. Instead, Gorsuch deconstructed the Kewanee Oil decision, considered its limits, and analyzed it in combination with a more recent Supreme Court decision on the Supremacy Clause. "What the judge did here was quite sophisticated," Pooley said.

Gorsuch also upheld a $3 million trade secret award for a Utah company despite a former employee's defense that he only disclosed it for spite, not profit. "The trouble is Utah law doesn't distinguish between a misappropriator's venial motives," Gorsuch wrote in StorageCraft Technology v. Kirby. "When someone steals a trade secret and discloses it to a competitor he effectively assumes for himself an unrestricted license in the trade secret. And that bears its costs."

For Hogan Lovells IP partner Christian Mammen, it was Gorsuch's copyright case Meshwerks v. Toyota Motor Sales USA that stood out. Gorsuch ruled that wire frame images of cars created for digital advertisements were not copyrightable because they claimed no original expression. "Digital modeling can be, surely is being, and no doubt increasingly will be used to create copyrightable expressions," Gorsuch wrote. "Yet, just as photographs can be, but are not per se, copyrightable, the same holds true for digital models."

"He specifically wrote a narrow decision," Mammen said. "He recognized there would be future scenarios that he didn't want to pronounce on."

Mammen thinks IP litigants of all stripes will get a fair shake from Gorsuch. The two worked on dissertations alongside each other at the University of Oxford. Although they brought different perspectives to their topics, they had lively, respectful discussions about which arguments worked and which didn't. "That went both ways," Mammen said.

Mammen counts himself as someone who believes D.C. Circuit Chief Judge Merrick Garland should have received a confirmation hearing for the current Supreme Court vacancy. "I'm sort of appalled that he didn't," Mammen said. "But I think we're now here, and Judge Gorsuch is an eminently qualified candidate and should get a hearing on his own merits."

Originally published on National Law Journal. All rights reserved. This material may not be published, broadcast, rewritten, or redistributed.

Contributing Author

Scott Graham

Scott Graham is a journalist who writes for The Recorder and The National Law Journal.

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